A harvest of lifelong spiritual wealth through 30 years of hardwork

2012/06/07,By Doris Li, China IP,[Comprehensive Reports]

When evaluating the role he has been playing during the last 10 years, Lv Guoqiang considers himself as a witness and participant in the development of China’s IP industry since the country became a WTO member. “I was engaged in judicial works for 7 years before I became the Director of Shanghai Intellectual Property Office (Shanghai IPO). But no matter how my role changes, the work I do remains essentially the same, that is, sparing no effort to promote the development of China’s IP industry.” Therefore, the life story of Mr. Lv is not only a story of how a former judge finally became the Director of Shanghai IPO, but more importantly, a story of a life which has merged with the development of China’s IP industry.
In addition to the judicial and administrative work he has done for China’s IP industry, over the years, Mr. Lv has also authored many thesis and case analysis based on his comprehensive theoretical knowledge and practical experience. Up to now, he has published six IP books and more than 70 papers. As the first bilingual (English and Chinese) book published in China’s judicial system, Intellectual Property Cases Selection, the composing and editing of which was organized and arranged by Mr. Lv, was highly evaluated by IP insiders both at home and abroad.
A witness and participant
On February 15th, 1994, Mr. Lv was appointed as the Associated Chief Judge of the IP Division of the Shanghai Higher People’s Court, taking charge of the preparation and formation of the IP Division of the Shanghai Higher People’s Court. One year later, Mr.Lv took office as the Chief Judge. Since then, he has worked at that position for 15 years.
During the above-mentioned 15 years, Mr. Lv personally experienced the full historical process of how Shanghai’s IP judicial practice rose from nothing.
“Now when I recollect my memories of those years of work, I’m truly proud of having witnessed and participated in the development of Shanghai’s IP judicial work and making a contribution to it,” said Mr. Lv with passion.
China IP: Since the reform and opening up of China, what are the major stages that Shanghai’s IP judicial work has experienced during its development?
Mr. Lv: It can be said that Shanghai’s IP judicial work began in the 1980s, and the first stage is the decade from 1983 to 1993 when the IP judicial work just took its first step. There were four basic features of this stage. First, there were relatively less cases to be dealt with, while the cases themselves were usually simple. Second, there were no specialized judicial institutions, let alone professional judges. Generally, copyright cases would be judged by the civil division while industrial property cases, such as trademark cases and patent cases, would be judged by the economic division. Third, the traditional judicial mode that was used to judge civil cases was applied directly to the judgments of IP cases. In addition, external communications were also very rare among the judges.
The second stage was from 1994 to 2004, especially after China’s accession to the WTO. This decade lifted the IP judicial work to a new level. In February, 1994, both the Intermediate and Higher People’s Courts in Shanghai established their own IP divisions. In July 1995, the former Shanghai Intermediate People’s Court was divided into Shanghai No.1 and No.2 Intermediate People’s Courts; each of them possessed their own IP division. In June 1994, the Shanghai Pudong New Area People’s Court took the lead in establishing an IP division among the basic People’s Courts around the country. This stage was featured by an increasing amount of IP cases and more diversified case types, the establishment of specialized IP judicial institutions, i.e. the IP divisions, the emerging of a group of professional IP judges, the setting of a whole suit of practicing regulations on IP judicial works and the growth of judges’ international exchanges.
Since 2005, the IP judicial work has entered the third stage—a stage for new developments. The most remarkable feature of this stage is the rapid growth of IP cases. In 2007, the number of first instance IP cases accepted by the People’s Courts exceeded 1,000 for the first time. And 2011 witnessed the acceptance of 2,500 cases, an increase of 17.8% comparing to 2010. Another notable change is that new types of cases keep popping up. To adapt to the above situations, the judicial institutions took many approaches to complete and improve their structures. In shanghai, there are all together nine IP divisions in its three levels of People’s Courts. IP related civil cases, criminal cases and administrative cases can be filed with the IP divisions of the basic People’s Courts. The expertise of the judges has been improved and the rules of adjudication have become basically the same as the international rules.
Memorable trials
China IP: Since 1994, you have acted as the Chief Judge of the IP Division of the Shanghai Higher People’s Court and the Associated Chief Judge of the Shanghai No.2 Intermediate People’s Court successively. When you look back, which cases have left you with the deepest impressions?
Mr. Lv: Being a Chief Judge, I tried a lot of IP cases which were complicated and knotty, and which had great influence worldwide. Among these cases, many were the first of their kind in China and thus they attracted great attention from other judges, experts, scholars and media. Some of these cases were selected for publication in the Bulletin of the Supreme People’s Court; some of the views were included in the relevant legislation and judicial work; and there were also some cases that became the judicial precedents when cases falling in the same category were at trial. The Court’s ruling on many cases have been regarded as outstanding in China’s IP protection work and possess a strong practical guiding significance.
Take China’s first IP dispute over geographical mark—the Jinhua Ham case—for example. The plaintiff of this case was Zhejiang Food Co., Ltd. while the defendants were Ham Producing Factory No.1 on the No.4 Road of Yongkang City, Zhejiang Province and Shanghai Taikang Food Co., Ltd. As the Chief Judge, I first lead the collegial panel members to visit the relevant departments, solicited the opinions from the State Trademark Office and the General Administration of Quality Supervision, Inspection and Quarantine of the People’s Republic of China. Then I conducted an on-the-spot investigation in Jinhua City, paid a visit to the People’s Government of Jinhua and solicited the opinions from the local Administration for Industry and Commerce (AIC) and the General Administration of Quality Supervision, Inspection and Quarantine (JAQSIQ). After reading the introduction to the case offered by the Zhejiang Higher People’s Court and the Hangzhou Intermediate People’s Court, the collegial panel and I elaborated a draft court verdict and amended it more than 10 times in order to clearly state and detail the legal problems the case involved. According to TRIPs and China’s existing IP Laws at that time, the Court at last made it explicit that a geographical mark should be subjected to the protection of IP. Therefore, the plaintiff’s exclusive right upon its registered trademark and the defendants’ right upon the geographical mark should be protected equally. On the ground that the plaintiff lacked evidence for proving the infringing actions of the defendants, the Court ruled in the favor of the defendant.
Neither side filed an appeal after trial. It was known that before the above ruling, the dispute between the plaintiff and the defendants had lasted for more than 20 years. During that time, both parties had filed several civil and administrative lawsuits. The decision of the Court not only protected the defendants’ right on their geographical trademark, but also solved the time consuming trademark dispute between the plaintiff and the defendants. More over, focusing on the defendants’ non-standard usage of the geographical mark, the Court also put forward judicial advice to the People’s Government of Jinhua City, requiring further regulation and management on the usage of geographical marks. In their reply, the People’s Government of Jinhua City extended their appreciations on the judges’ diligent work and just ruling, and gave out positive responses towards the problems mentioned in the judicial advice.
There was also the Starbucks case, in which a well-known trademark was identified for the first time in the ruling of a Shanghai’s Court after the amendment of the Trademark Law. The plaintiffs were the Starbucks Corporation and the Shanghai Starbucks Coffee Company Limited, while the defendants were Shanghai Starbucks Cafe Limited and its affiliated company on Nanjing Road. This case was a typical one over the conflict of trademark right and name right of enterprises. The legal problems involved in this case included the protection of international well-known trademarks. It also involved an examination of the necessity of the judicial determination of well-known trademarks when trademark right conflicts with the name right of enterprises, the scope and conditions of the judicial determination of well-known trademarks, the examination procedure of evidences concerning foreign affairs, etc…
The collegiate panel accurately grasped the key problems of the trial and did in-depth research and deliberations on the critical legal issues and the court verdict was revised repeatedly to ensure its quality. At last, the Court determined that the plaintiffs’ trademarks “STARBUCKS” and “星巴克” were well-known marks. Thus, the defendants’ actions of registering the plaintiffs’ trademark “星 巴克” as the company’s name and applying the trademarks “STARBUCKS” and “星巴克” in its business operations should be deemed as trademark infringement and unfair competition. The ruling received warm welcome by foreign media.
Another notable case is the Safeguard case, which marks the first recognition of a well-known trademark in a Court in China. The plaintiff of this case was Procter & Gamble Co. and the defendant was Shanghai Brilliant Brainpower Technological Development Co., Ltd. When this case was heard, China’s Trademark Law was not yet revised, and neither was China a WTO member. Moreover, there were even no relevant legal precedents. At trial, the collegiate panel determined that the plaintiff’s trademark “Safeguard/舒肤佳” was well-known according to the principles and spirit of the Paris Convention, to which China was a member and the Court ruled that the defendant must cease using the conflicting domain name “safeguard.com.cn.” The principle established in this trial concerning the protection of well-known trademarks was included in the Supreme People’s Court’s Interpretation on Several Issues concerning Laws Applicable to Civil Disputes Involving Computer Network Domain Names. Since the case was of great significance to settling conflictions between trademarks and domain names as well as to the protection of well-known trademarks, it was listed as one of the Ten Important Cases Involving Well-known Trademarks in China. On May 20th, 2004, Cao Jianming, the Associate Chief Judge of the Supreme People’s Court at that time, pointed out in his speech addressed at the 4th National Representative Assembly of China Intellectual Property Society (CIPS) that the ruling of the Safeguard case and similar cases helped to include network domain name disputes into the range of civil actions. This made it possible for the People’s Court to determine whether a trademark is well-known or not in a single case upon the request of an involving party and finally provided the grounds on which unfair competition and trademark infringement could be determined.
Moreover, every year from 2006 to 2008, the People’s Court Newspaper made full-page reports on three cases I heard as the Chief Judge on World Intellectual Property Day. Among the cases I heard, the Starbucks case and other five cases were published by the Supreme People’s Court Bulletin; MONTAGUT trademark infringement and unfair competition case and other three cases were awarded, respectively, the first and the second prize among the Outstanding IP Court Verdicts in China; four cases, including the Jinhua Ham geographical mark case, were included in the Ten Important IP Cases in China.
From the Chief Judge to the Director
“In March 2009, I left the Court and took office as the Director of the Shanghai IPO.” Not long after that, the world’s attention was attracted to Shanghai. In 2011, the Shanghai World Expo was definitely one of the most important events in China. People’s attention also means higher requirements in IP protection. Many were worried.
China IP: Leaving the Court for the Shanghai IPO, the most difficult work you were facing after you took the post must have been the Shanghai Word Expo (Expo). Did the work leave with you a deep impression?
Mr. Lv: The year 2010 was unforgettable because of the IP protection work in Shanghai. I had to be at the Expo during the daytime and organize or attend to various meetings or prepare plans in the evening. I had to work for more than 10 hours every day! Apart from the IP protection work, the Shanghai IPO was also responsible for a large amount of reception work, and none of them could be neglected. To be honest, at that time, I was secretly worried. After all, the responsibilities I had to bear were great and the work I did was of great importance. We did a lot of work then, such as conducting special actions to combat infringements upon the IP of the Expo, establishing a joint law enforcement mechanism to effectively attack the sales of counterfeiting products in and around the Expo Site, building a rapid response mechanism to deal with emergencies and disputes appropriately, providing good IP service coverage to create a good atmosphere for the Expo’s IP protection, etc... These experiences also benefited our later work. It can be said that through the Expo, we accumulated experiences and built our confidence in handling the IP protection work during such large international activities.
The Expo gave us the most precious spiritual treasure, among which its influence on the legislation and judicial work should come first. The laws and regulations adopted in protecting the IP of the Expo would generate a far-reaching influence on the legislation and judicial work of China’s IP protection. The legal effect of the Expo could not be matched with any commonplace exhibition. The Expo left us rich IP protecting experiences and relative regulations. Secondly, it had a profound impact on the citizens’ IP awareness. Publicizing the importance of IP protection has never ceased ever since the successful bid for the Expo and its enhancement on the citizens’ IP awareness has been invisible and hard to measure. Meanwhile, it was also of great significance to the enforcement of the National Intellectual Property Strategy Outlines and actual practice. Last but not least, the IP protection work during the Expo also contributed to the adjustment of industrial structure, the improvement of the cultural and creative industry and the enhancement of enterprises’ innovative abilities in Shanghai.
China IP: The closure of the Expo put an end to a big task. What the major works for you after the Expo?
Mr. Lv: After the Expo, one of our most important works was to make the 12th Five Year Plan (Plan) for the development of Shanghai’s IP. It was the first Five Year Plan for Shanghai’s IP industry and was the Shanghai IPO’s responsibility to draft it. However, there were many difficulties in making such a plan: the time was limited, the content range was quite wide, and there were many departments involved. Under such situation, we did a large amount of research, solicited opinions from all walks of life, clarified the general direction for future development and pointed out clearly the major measures to be adopted and the key points in our work. As far as we were concerned, the key points should be improving (1) the policy environment for innovations, (2) the IP protection work in strategic burgeoning industry, (3) the IP work in modern service industry, (4) the IP work in major projects, (5) the IP work in the Expo Site, (6) the IP work in enterprises and public institutions, (7) IP pawning and financing work and so on. By the end of last year, the Plan was made available to the public and received warm reception. Next, we will make a Ten Year Plan for Shanghai’s IP development and do our best to provide IP support for the construction of the “Four Centers” and the “Four Leading” goals of Shanghai.
(Translated by Monica Zhang)

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